Section 2 of the Lanham Act contains a variety of limitations on trademark registration. Some are widely used—for example, the prohibition on merely generic marks. Others rarely come into play, including a registration bar for any mark containing “matter which may disparage.” In its first ever interpretation of this statutory provision, the Federal Circuit affirmed a decision of the Trademark Trial and Appeal Board (TTAB) that denied federal registration to the mark STOP THE ISLAMISATION OF AMERICA. The Federal Circuit agreed with the TTAB that the mark would be disparaging to a substantial composite of the American Muslim community. The stakes are high here because the Federal Circuit is the typical route for appeals of TTAB decisions, and a highly anticipated decision from the TTAB on disparagement involving the WASHINGTON REDSKINS mark is due soon.

Pamela Geller and Robert Spencer tried to register their STOP THE ISLAMISATION OF AMERICA mark in connection with services of “understanding and preventing terrorism.” Geller and Spencer are known for their criticism of Islam, particularly their opposition to the construction of a mosque and Islamic Center near the former site of the World Trade Center. Organizations started by Geller and Spencer, including Stop the Islamisation of America, have been designated as hate groups in the United Kingdom and attracted widespread criticism in this country. This background appeared to influence the Federal Circuit’s view as to whether Geller and Spencer’s mark was disparaging.

The Federal Circuit began its analysis by endorsing the TTAB’s two-prong test for disparagement inquiries. Under the first prong of that test, a court must determine the likely meaning of the mark in question. Under the test’s second prong, the court examines whether the likely meaning refers to an identifiable group and, if so, whether that meaning is disparaging to a substantial composite of that group. The Federal Circuit spent most of its time on the first prong, examining the evidence for the TTAB’s finding that “Islamisation” has a public meaning referring to conversion or conformance to Islam. It endorsed the TTAB’s use of online dictionaries, but also ratified its consideration of essays posted by Geller and Spencer on their own website as well as anonymous reader comments posted on the same website. With regard to the essays, the Federal Circuit read them as advocating suppression of the entire Islamic faith, rather than merely critiquing particular political groups like the Muslim Brotherhood. The essays called for opposing mosque-building, which the Federal Circuit implied was tantamount to an attack on Islam itself. With regard to the website comments, the TTAB cited posts like “Islam is evil” and “There’s only one thing you can do and that’s say no to Islam and the Islamization of America.” Geller said that these were “cherry-picked anonymous comments” deserving of no evidentiary weight. Nevertheless, the Federal Circuit affirmed the use of such evidence in determining the likely meaning of the applicants’ mark. From there, it was not surprising that the court, in evaluating the test’s second prong, found that STOP THE ISLAMISATION OF AMERICA refers to American Muslims and that this group would be offended by a mark associating Islam with terrorism.

In many ways, the Federal Circuit’s opinion is not surprising. The reported decisions evaluating whether marks are disparaging or “scandalous” (another registration prohibition under Section 2) reveal longstanding concern over marks that can offend the sensibilities of particular religious or ethnic groups. For example, a 1938 case heard by the Federal Circuit’s predecessor, the Court of Customs and Patent Appeals, involved the mark MADONNA in connection with wine. Denying registration, the CCPA relied on its own intuition that intoxicating liquors like wine cause various “evils” while the Madonna in Christianity “stands as the highest example of the purity of womanhood, and the entire Christian world pays homage to her as such.” In re Riverbank Canning Co., 95 F.2d 327 (C.C.P.A. 1938).

What In re Geller suggests, however, is current judicial discomfort with the disparagement provision of the Lanham Act and an attempt to build a larger doctrinal edifice to justify its existence. The two-prong test endorsed by the Federal Circuit looks like scaffolding meant to make the disparagement analysis seem more rigorous than it really is. After all, once the court determined the likely definition of STOP THE ISLAMISATION OF AMERICA, it seems like the determination that the mark was disparaging to American Muslims was pretty obvious. The Geller decision also authorizes an expansion in the amount of evidence that should be brought to bear in determining whether a particular group is being disparaged. Do we really want examiners at the PTO building lengthy cases regarding the likely interpretation of a potentially disparaging term by doing things like sifting through anonymous reader comments? It might be better to simply rely on dictionary definitions, which in this case would have been enough to conclude that the applicant’s mark was meant to “stop” an entire religion.

In a recent article, I maintain that judges frame trademark decisions (and intellectual property law decisions in general) in the seemingly neutral language of efficiency and economic analysis but, beneath the surface, there are often hotly contested moral considerations that drive judicial outcomes. Today, it is not considered appropriate for judges to apply moral intuition to their decisions, particularly in the utilitarian-based world of intellectual property law. But this happens all the time in trademark law, from findings of infringement to mark validity to geographic restrictions. But it is usually done behind the scenes. Section 2(a)’s prohibition on disparagement, however, offers a seemingly blank check for judges to engage in just this sort of unfettered analysis of right and wrong. The legalistic approach adopted in Geller shows that the Federal Circuit is nervous about cashing this blank check. Disparagement issues will continue to appear, but it is likely that courts will decide these issues only reluctantly and with a preference for anchoring determinations in seemingly neutral doctrinal frameworks and comprehensive sources of “likely meaning.”

Pregnant, Christian wife of Christian husband sentenced to death for apostasy and to 100 lashes for adultery by having sex with her Christian husband under Sharia Law.

Defenders of the sentence pointed out that the pregnant woman would be allowed to have the baby and wean it before sentence is carried out.

Well how merciful. Back in the days of the French Revolution, they only allowed the pregnant aristocrats to have their babies before execution for the crime of being an aristocrat — dragged from the birthing bed to the guillotine. How merciful. How civilized.

[…] Patently-O commentator Mark Bartholomew points to this Federal Circuit case. The issue is when a trademark may be denied for containing “matter which may disparage” a group of persons. At issue in this case is a proposed mark of STOP THE ISLAMISATION OF AMERICA which was denied for violation of this disparagement provision. The Federal Circuit approved a two-prong test. Bartholomew further states: […]

“The Federal Circuit agreed with the TTAB that the mark would be disparaging to a substantial composite of the American Muslim community. The stakes are high here because… a highly anticipated decision from the TTAB on disparagement involving the WASHINGTON REDSKINS mark is due soon.”

First and foremost, the immediate decision here appears to be easily the correct decision based on the law involved. The evidence presented (even if blog comments were not included) clearly paints a disparaging use and attempt to equate a particular religion with unbridled terrorism. The protests by the applicant are simply not believable and no real alternative is provided by the applicant.

Second, the guest post by the professor seems to miss the mark on a number of (substantive) fronts.

Once again, I see signs of Ivory Towerism intruding and the talking head syndrome grab the soundbyte spotlight of someone with really no worthwhile hands-on experience in the trenches comes across as yet another academic polemic.

Several points are involved in reaching this view.

A) While the Washington Redskins disparagement case is upcoming, there is far too little substantive comparison between that case and this Islamisation case. There is a nexus of “identified group,” but little else is discussed by the author.

B) The author has a history of conflating and co-mingling two very different forms of Intellectual Property protection, that arise from two very different constitutional provisions, and thus address two different aims. There are deep problems with such a Grand Unified Theory of IP law approach, more than what can be discussed in a blog response.

C) Trademark considerations long have a history of a holisitc non-four-corners approach that easily support taking into consideration what Geller and Spencer have aimed to do with their mark (no “expansion” cry is warranted – the sky is not falling). If anything, this draws a sharp distinction between this case and the sports world emblems and devices such as the pro sports teams from myriad examples in and out of the court system, from the Washington Redskins and the Cleveland Indians to the college, high school and even grade school teams across the country.

D) The author seems dissatisfied with “the two-prong” test, implying that the test is flawed with the second prong being a rather meaningless de facto result of the first prong. What seems missing is the distinction from B) above that the meaning reached can be quite different to the general population and to any particular individual subset of the general population. What remains unclear from the essay is the weight of the various meanings. One wonders if we live in a society of such political correctness that the slighted feelings of ANY small group will de facto over rule what the rest of society thinks? (Malcolm’s Vinnie Barbarino routine notwithstanding) Will such “hurt feelings” be allowed to so chill the landscape of commercial speech to which trademarks apply? This may very well BE the decision to be reached, as the lack of trademark protection does not prevent the commercial speech form occurring (as several have correctly noted), but merely prevents protection of that speech within the statutory realm. Given the differences in constitutional origins, this lack of protection seems far less reaching (patent law on its face carries far less field distinctions). Perhaps the repeated failures of First Amendment arguments (see the other recent guest professor’s failures on that accord and the recent Golan v. Holder line of cases) may have more impact to the Commerce Clause-based intellectual property protection framework. Perhaps not.

E) Sensationalism and the Ivory Tower effect of publish or perish seem a likely driver of the thought process here, less so than a more clinical and objective treatment of the legal issues.

Some additional and interlaced musings:

“What In re Geller suggests, however, is current judicial discomfort with the disparagement provision of the Lanham Act and an attempt to build a larger doctrinal edifice to justify its existence. The two-prong test endorsed by the Federal Circuit looks like scaffolding meant to make the disparagement analysis seem more rigorous than it really is. ”

Refer to D) above.

“The Geller decision also authorizes an expansion in the amount of evidence”

No this does not authorize an expansion.

“In a recent article, I maintain that judges frame trademark decisions (and intellectual property law decisions in general) in the seemingly neutral language of efficiency and economic analysis”

More conflation, given that patent rights at best have a minor economic driver in the obviousness analysis (putting aside the remedy impacts as remedy being distinct from rights).

“but, beneath the surface, there are often hotly contested moral considerations that drive judicial outcomes. Today, it is not considered appropriate for judges to apply moral intuition to their decisions, particularly in the utilitarian-based world of intellectual property law.”

If anything, such would be even more reason to call out judicial activism and recognize which branch of the government has been authorized to write patent law – explicitly.

“But this happens all the time in trademark law, from findings of infringement to mark validity to geographic restrictions. ”

This seems like a vastly overblown statement – geographic restrictions as a form of hotly contested moral positions…? Really?

“But it is usually done behind the scenes.”

Read this as ‘implicitly’ – how deep that rabbit hole?

“Section 2(a)’s prohibition on disparagement, however, offers a seemingly blank check for judges to engage in just this sort of unfettered analysis of right and wrong.”

Referencing E), and as I recently noted on the Hricik side of the blog, one might ponder where, if at all, common law ability might be permissible. As I noted, the authority – per the constitution – is squarely and only with the legislative branch. However, the legislative branch had in direct words shared that authority with the judicial branch in more than one area of the law. Prior to 1952, one such area was in the ability to use the tool of common law evolution to define “invention.” It is well documented that such was removed in 1952 because the Court went on a philosophical binge. Another different area – still on the books – is in the area of remedies (the whole reference to courts of equity). Now these thoughts apply fully to patent law. Do they apply fully to trademark law? Again, the different origins of the two sets of protection may yield results that should NOT be conflated. There is no such clear mandate for only one branch of the government to write trademark law, and no such clear removal of authority to use the tool of common law evolution in trademark law.

“shows that the Federal Circuit is nervous… courts will decide these issues only reluctantly…”

Any sign of “nervousness” and trepidation seems overblown hype, and more likely can be explained by simple judicial economy. Such is less sensational, and will less likely lead to “breakthrough academic journalism” (a double down slam on today’s state of both journalism and academics, btw).

I don’t think the mark is descriptive. I think that it should have been rejected for failing to function as a trademark. It’s a statement and not not a source indicator. I’m not down with the spirit of these people, but something bothers my about the disparagement grounds for rejection. I think it raises 1st amendment issues. Seems like the USPTO is regulating speech.

just because commercial speech is involved, does NOT mean that there is an absence of First Amendment issues.

That’s not my argument. My argument is that you have no “First Amendment right” to trademark your views on any subject. I have no idea why anyone would believe that the First Amendment provides you with the right to trademark your views. How in the world would one get there? There isn’t even a Constiutional right to a trademark of any kind whatsoever — it’s a completely fabricated legal abstraction which exists at the option of Congress.

We all have the right to express our views, of course, without the government interfering. But indiduals don’t have the Constitutional right to any form of government enshrinement of their views, although it sometimes may not seem that way if, e.g., you’re in a religious minority in the United States.

That is my explanation as to why there are no “First Amendment issues” raised by this trademark case. The First Amendment doesn’t protect anybody’s “right” to trademark stuff.

Likewise, it would also be my explanation were someone to ask why there are no “First Amendment issues” raised by someone’s failed attempts to trademark the phrases “f— you” or “Help me.” Similarly, there are no “First Amendment issues” raised when your patent on a novel, non-obvious method for informing someone they have a disease is denied.

If you’ve got a different view and an argument in support of that view by all means let’s hear it.

The Red Queen / Humpty Dumpty decrees “Otherwise your comments are baseless and self-serving at best.” even as his own empty posts echo off the content-filled posts of mine already shared on yet another board.

Maybe you might want to try to add something of substantial value to the thread instead Malcolm?

My initial post at 4 and the added post at 3.2.1 are built on a foundation of fact and show thoughtful and careful analysis.

If you say so. Everyone else here sees nothing but self-serving and baseless hoohaw. I implore anyone to come to your aid if they have an ounce of reasoning.

Or you can simply provide one example of a denial of a trademark that implicates the First Amendment and explain your reasoning in detail rather than waving your hands around like a f00l.

Why is this so difficult for you? You seem very confident and yet you can’t articulate your reasoning when pressed to do so. This is a very common pattern with you and people like you (e.g., ignorant blowhards with extreme narcissistic tendencies).

I tend to agree that the real problem here is inherent lack of secondary meaning. Refusing to register the mark because the Jewish owners are conducting a crusade against Islam that they feel is barbaric seems to be akin to censorship of a political viewpoint. Back in the day, the ACLU, and Ginsberg its former head lawyer, defended the right of NAZI’s to speak. There is no freedom to speak if everything we say must be PC.

A nuance here is that lack of giving of a trademark is not the same as censoring a political viewpoint, because the political viewpoint can still be expressed in a forum recognized for expressing that viewpoint – no matter how disparaging the words are.

However, a sharp divide still exists between this capability and Malcolm’s banal “there is no First Amendment issues” statement.

Take the sports teams out there that already have trademarks – for example the Washington Redskins and Cleveland Indians at the professional level: there are First Amendment issues (even for commercial speech) involved in an action to remove a right based on overempowering a minority group’s ability to define the meaning of a term.

Political correctness is entirely about being political and nothing about being correct.

ANY word now in legitimate use, with a current societal understanding of the meaning of the word that is not disparaging, can be subject to a concentrated effort by any minority group to either change the meaning of the word (either change or change back to) to something that that particular group can claim to be offensive and disparaging. To allow such developments is to condone a type of censorship.

What if a radical feminist group finds the trademarked name of Google to be offensive and disparaging, given that googling at a woman was deemed to be (by the radical feminists) degrading?

The First Amendment is not meant to muzzle speech, but to allow the presence of speech – yes even (or especially) the presence of speech that is considered by some to be degrading. The tactic of attacking trademarks is meant to muzzle that speech. I know of NO rational minded sport fan that would on first glance think that the chosen monikers and emblems are chosen in order to denigrate. It is only after political correctness is interjected into the debate that any notion of gee, that might be taken to be offensive enters the picture. A rational understanding of this dynamic reveals an intent to constrain that runs counter to the First Amendment intent NOT to have such constraints.

There is a difference between being civil (or uncivil) with a present day attempt in the choice of language and the common understanding of that language and the actions to constrain another’s commercial speech based on a small group’s perception of meaning clearly not intended by the use of the word in a commercial setting.

This immediate case does not reach the sports team trademark cases as I noted at post 4.

Here’s a dumb question, perhaps – Isn’t the slogan merely descriptive or, depending on how much credit you give to the applicant’s state intent, deceptively misdescriptive?

There’s something a bit peculiar about the disparagement provision of the Lanham Act, it seems to me. By denying trademark protection to disparaging marks, we’re saying that anyone can use the disparaging mark, for any and all purposes, rather than that the use of the disparaging mark in commerce should be exclusively identified with one readily identifiable entity. I wonder if that’s really what we want.

Dan is right. It is descriptive and should be denied on that ground. To get into the disparagement situation and, in fact to stretch into looking at the content of the website and comments on that starts raising First Amendment shivers. Dennis better look out for what we post here, lest he lose his trademark rights.

Not to mention the induced nausea of the Court’s political correctness.

I have issues with drawing lines about hate. This is a very slippery slope going from defining protected groups and hate speech into 1st amendment rights. How about “STOP the Democrats from taking over”? Am I a hater now?

I agree – stick with the descriptiveness rejection and avoid the whole disparagement problem.

I do not see the distinction that you wish to make with trying to constrain the groups that may be disparaged.

I think any group would do, if the rest of the mark presented an obvious disparagement. A group based solely on some other protected status such as gender or nationality is not so delineated in trademark law.

I will grant that being a member of a protected class may make it easier to make a case of disparagement for such protected groups – but making a case easier is not the same as which groups might be disparaged, or the fact that disparaging marks (as an entire category) are not permitted protection under trademark law.